Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today’s report highlights:

  • an article interviewing several intellectual property attorneys about the Solicitor General’s brief in in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC;
  • another article analyzing how the “Federal Circuit’s opinion and a potential Supreme Court affirmance may have far-reaching implications” in a pending case raising questions about patent law’s enablement requirement; and
  • a third article discussing how the Federal Circuit recent found that a whiskey bearing a defunct investment firm’s name is likely to confuse customers.

Eileen McDermott wrote an article for IPWatchdog highlighting the commentary of several IP practitioners on the Solicitor General’s brief in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC. As the article notes, Scott Hejny emphasized that “‘Section 101 has plagued patent litigants for years, the Federal Circuit is clearly divided on the issue, and parties need clarity on patent eligibility.’” According to Miranda Jones, “‘a call for the views of the [Solicitor General] coupled with a grant recommendation from the SG [usually] results in a cert grant.’” The article also notes that Wendy Verlander emphasized how the Solicitor General “‘is right that the Court needs to clarify the test—not only for patents implicating laws of nature—but, more importantly, for software, where decisions about what is abstract have been notoriously inconsistent.'”

Jessica H. Zafonte and Joseph V. Saphia co-authored an article for analyzing how, in Amgen Inc. v. Sanofi, Aventisub LLC, “Amgen’s asserted patent claims have twice been found valid by juries, but repeatedly held to be invalid for lack of enablement by the District Court of Delaware and the U.S. Court of Appeals for the Federal Circuit.” The authors noted how Amgen’s petition “argues that the Federal Circuit . . . ‘[rewrote] the substantive enablement standard’ for genus claims by invalidating genus claims if ‘substantial time and effort’ would be required.” According to the authors, under this “new” enablement standard, “broad functional genus claims will be scrutinized and patent draftsmen and patent holders asserting such claims should beware of enablement challenges.”

Blake Brittain filed an article with Reuters discussing how, in Tiger Lily Ventures Ltd. v. Barclays Capital Inc., “a company that sells ‘Lehman Brothers’-branded whiskey failed . . . to persuade [the Federal Circuit] to reject a U.S. trademark challenge by Barclays Plc, which owns assets from the defunct investment giant Lehman Brothers.” Brittain noted how the Federal Circuit “rejected Tiger Lily’s argument that Barclays had abandoned all its ‘Lehman Brothers’ trademark rights” by letting them expire. Moreover, Brittain explained, the Court “affirmed that Tiger Lily’s mark was likely to create confusion, noting that the names were identical, the original Lehman Brothers trademark is famous, and Tiger Lily was trying to capitalize on the company’s fame.”